16 F. 669 -

16 F1d 669

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Case Text

WASHBURN & MOEN .MANUF'G

co. v.

GBIESCHE.

669

linerein of devices, new or old, not included in or suggested by the original. Munson v. Gilbert <t Barker Manuj'g Co. 3 Ban. & A. 595. It must be borne in mind that the court is dealing with a "combi. nation" patent, and that under pretense of a reissue a new combi. na.tion cannot be upheld. Therefore the. several motiol;ls for preliminary injunctions are overruled.

WA'SHBURN

&

MOEN MANUF'G SAME

CO. v.

GRIESCHE.-

v.

FUCHS.·

Oircuit Uourt"E. DMi88ouri. June 4,1883.)

1.

PATENTS-RIGHTS OF ASSIGNEE.

Where, through several assignments, an individual becomes the owner of a number of distinct patents, his rights are no greater than those of his assigrlors, respectively.

2.

SAME.

Where A. and B. each invented and patented a machine for manufacturing wire fencing, the patent in each case being for a combination, and both pat. ents were assigned to C., held, that C.'s rights were not infringed by D., who used a machine unlike either A.'s or B.'s, but containing features of both.

Motions for Preliminary Injunction. These are suits to recover for the alleged infringement of. patent No. 253,781, granted to Sidney M. Stevens, February 14, 1882; patents No. 214,706, granted to Noble G. and Thomas D. Ross, April 22, 1879; patent, No. 233,116, granted same parties, October 12, 1880; and patent No. 207,710, issued to Jacob Brotherton, September 3, 1878,-all of which are held by plaintiff as assignee. Patents Nos. 253,781 and 214,706 are on machines for manufacturing barbedwire fencing. Patent No. 233,116 is on barbed-wire caQles. Patent No. 207,710 is for an improvement in barbed-wire fencing. The complainant asks for injunctions to restrain the defendants from nsing machines for manufacturing wire fencing containing inventions secnred by the Stevens and Ross patents, and from mannfacturing or .vending barbed-wire fencing containing the improvements coverec1 by the Brotherton patent. The' question of the infringement of the latter patent was not argued, however, and is not referred to in the opinion of the court. .
-Reported by B. F. Rex, Esq., ot the St.LOUIS

bar.

670

,

REPORTER

B. F. Thurston, Thomas H. Dodge, Coburn IX Thacher, Offield IX Fowle, John C. Dewey, and Henry Hitchcock, for complainants. J. M. Holmes, Walker cf; Walker, and Dyer, Lee IX Ellis, for defendants. Also, Finkelnburg cf; Rassieur and Dexter Tiffany, for Griesche. TREAT, J. As admitted by counselfor plaintiff, no injunction can issue' for the manufacture by defendant of machines made for plaintiffs' licensees, (4 Ban. & A. 427; 2 Ban. & A. 170; 4 Ban. & A. 441; 3 Ban. & A. 39;) but it is contended that he has announced his purpose to manufacture and vend generally, and should be restrained from so doing. That contention might not be considered sufficiently established, if the motion was to depend solely on the evidence as to that point. Inasmuch as the case of the same plaintiffs against Fuchs is also before the court, and the two were argued together at great length, it is advisable to look fully into the question of alleged infringement. On this preliminary motion the court does not, as on final hearing, when full proofs are before it, pasa definitely upon the validity of plaintiffs' patents, which the defendant expressly assails. Prior patents have been cursorily examined, merely to ascertain the state of the art, with the view of learning what plaintiffs' patents cover, and whether defendant infringes. Each of plaintiffs' patents is for "combinations," and not for a single or specific device. It does not appear distinctly what; if any, new devices were used in the combinatioIl,; and certainly there is in neither' a claim for a new device separate from the combinations. While Ross is silent as to any new devices, Stevens states:
"No claim is made herein to the spooling and twisting apparatus shown and described, nor to the barbed fencing itself, as I reserve the right to protect the same by separate letters patent; but I do claim the new improvements herein described, all and several, in delivering apparatuB and barbing mechanism, and in the combination of them with each other, and with the spooling and twisting apparatus; that is to say, I claim: (1) In a machine for making barbed-wire fencing. mechanism constructed to simultaneously feed the main fence-wires and apply the barbs thereon, in combination with means for operating said mechanism, substantially as described."

The other claims are also for "combinations," to ascertain the precise nature of which reference must be had to the specifications; for the claim cannot be construed as designed to cover all possible combinations of mechanism of whatever kind, whereby, through operating machinery, fence-wires are simultaneously fed, and barbs fastened thereon. So broad a claim would be void; for prior pat-

WASHBURN & MOEN MANUF'G 00. V. GRIESOHE.

671

ents for the same general purpose were in existence, Ilond such a broad claim, closing the avenues to invention, is not permissible. ';rhe cOJ;llbination patents by Stevep.s and Ross cover, then, only .the combina.tions of devices, whether neworold, described by them; no other or different combinations. Of course, any combination, ing only in the substitution of known mechanical equivalents in any .part of the or in merely changing the form of or more of the parts in a way not essential to the result, or producing 110 new and llseful result, would be an infringement. 3 Ban. & A. 9,6. ' , ' ' The ,dqctrine as to combinations is familiar, and need not be repeatE}d.' Do defendants use the combinations, or any of them, scribed in the Ross patents or in the Stevens patent,. taking eacl;l singly, as if it were the oply;patent exi!lting? Whl;ln, through assignments, an individual. the owner of several distinct p.atents, he have no greater rights than his assignors reli'pectively.. Hecann,ot claim that as no.one of the assigned patents IS specifically infringed, yet, if they are all considered, and some eletrlent.of one is imparted an4 thus by patch-work a really cOJ;llbination, unpatented, be formed, therefore the defend.'ant, who uses none of those patents, must be held to infringe. To inffin,ge.what? No existing patent. To illustrate: If A. has a patent and 13. has a patent, and C. infringes neither; and if A. assigns his patent to D., and B. does likewise,-does C., by force of those assignments, become an infringer, when he infringed neither? _ 3 Fisher, 536; 16 Pet. 336; 15 Wall. 187; 1 Black, 427; Id. 78; 2 Fisher, 89. In these, as in some other cases recently argued, there seemed to be an unexpressed,yet implied, thought thatthe assignment of different patents to a common assignee gave to the latter greater rights than the respective patents conferred on their patentees; so that the assignee, claiming up.der both, could, by lapping, one over the other, or incorporating parts of one into the other, obta,in a right, unpatented, which neither of the assignors could separll>tElly maintain. No such ductrine can be accepted. Each patent must rest on its own merits alone. Munson v. Gilbert « Barker Manuf'g Co. 3 Ban. & A. 595. It would be impracticable to place on paper, with no facilities for drawing, even if it were advisable, the detailed and successive elements of the Ross or Stevens combinations, or of defendant's machine. The devices and arrangements in the combination, whether of the Ross or Stevens patent, are not the same as in the defendant's
o

672

FEDERAL REPORTER.

patent in important particulars, and do not operate in the same mode. It being admitted and apparent that the feeding mechanism operates in the Ross and Stevens patents intermitt'ingly, and in the defendant's constantly, suppose defendant applied for a patent as an improvement on the Ross or Stevens machine, in what would his improvement consist? If he discards the former combination, instead of adding thereto, would not his combination be a new one instead of , an improvement on the old ones? If he omits some of the old elements, then his does not infringe; if he uses the same elements in the same combination, he does infringe, although some of his elements differ in form or modes of immediate operation, provided they are known mechanical equivalents. If, on the other hand, he omits some of the devices in the original or patented combination, and substitutes therefor, not a known mechanical equivalent, but an entirely new device, whereby a more beneficial result is effected, his combination is a new one, and not to be excluded from competition with the old. . It appears that defendant's machines follow none of the combinations under which plaintiffs claim. It is very different in many of its devices from those in the Ross patents, and although it apparently approaches nearer in its feeding mechanism to the Stevens patent, yet it changes essentially some of the parts of the Stevens combination, and inao doing practically l'everses the operation, and accomplishes what the Stevens machines could not effect so beneficially. If the views here intimated are not to obtain, then the road to all inventions for feeding barb-wires is closed. These motions were more fully argued than is usual; and it remains merely to state that, as at present advised, no infringement sufficiently shown. At the final hearing the court may be more fully informed upon the merits of the controversy, and reach a different conclusion from what is now suggested. As the cases now stand, the motions for provisional injunctions are denied.

COUPE'll. WJl:UHEBHEAD.

673 and others.

1888.)

COUPE

and others v.

WEATHERHEAD

(Circuit Oowrt, D.

Island.

PATENTS FOR INVENTIONS-DIVERSITY IN INVENTIONS.

Where a greater number of persons have to be employed In the operat"on of a machine formerly in use than in a patented machine, this tends to pl'ove that the machines are not alike.

I.

SAME-OMISSION OF SoME ELEMENTS AND ADDITION OF OTHERS.

Where, by the omission of some of the elements of such former macHne, and the addition of other elements not useful In the old machine, an improvement results, such improvement may be patentable.
3.

Infringement of a claim is not escaped by the employment in a combination of a movable board, which only affects two-thirds of a certain result, when it depends on the thkkness and stability of the board whether the whole operation is or is not copied.

4.

8AME--PATENTABJLITY.

A machine need not be antomntic to be patentable. Improvements in any tool or implement used by hand man art or industry urI! patentallJe.

In Equity. Wilmarth II. Thurston and Benj. F. Thur8ton, for plaintiffs. Walter B. Vincent, for defendants. Before LOWELL and COLT, JJ.. LOWELL, J. This bill is brought upon patent No. 213,323, granted the plaintiff Coupe, March 18, 1879. It describes a mode of st.retch· ing and reducing to a uniform thickness what is known in the trade as raw-hide leather-that is,a hide which has been stripped of its hair, and has been softened and brought to a state in which is very soft and flabby and much wrinkled, but has not been tanned. The patentee says:
.. My invention consists in a combination of mechanical devices wl'lich are capable of producing, in connection with hand manipnlation, the desirable results of thoroughly stretching the hides and rendering them. of evell thickness in all parts."

The specification describes a table or beam over which. the hide is to pass, and which is breast high, in order that the workmen may conveniently use it; then the hide passes over a bar or stretcher, which is somewhat arched or crowned, in order to stretch the hide transversely; it then goes to a roller to which it is damped and over which it is slowly wound. The workman accelerates or retards the passage of the hide by liftv.16,no.6-43